Friday, 19 December 2014

T 1458/11 - You talk too much

During the oral proceedings before the opposition division the proprietor had most of its case represented by a trainee. This appears to violate the requirements that the board of appeal had set out G 4/95. The opponent now asks a reimbursement of the appeal fee because of a substantial procedural violation.

The board doesn't go along; the opponent should have complained during the oral proceedings. The following keywords were provided:

Oral submissions by an accompanying person in opposition proceedings (yes allowable - in conformity with G 4/95)Requirements of G 4/95 to be met throughout the oral proceedings (yes - duty of the opposition division to ensure)Party's
obligation to inform the opposition division that requirements of G4/95
are not met (yes - as
soon as it becomes aware thereof)

<background>

Summary of Facts and Submissions
(...)
III.
The opposition division held that the patent as amended according to
the auxiliary request filed during the oral proceedings before the
opposition division met the requirements of the EPC.
In
particular, it found that the subject-matter of claim 1 of the patent as
granted was novel over D1 and D2, but lacked an inventive step in view
of D2 alone, and that the subject-matter of claim 1 of the auxiliary
request involved an inventive step in view of D2 as the closest prior
art and D1.

At the oral proceedings before the opposition
division, appellant 2 was represented by a professional representative,
Mr Chivarov, accompanied by Mr Huber, who was said to be a trainee in
the law firm of Mr Chivarov. Appellant 2 requested that Mr Huber be
allowed to speak "on selected issues during the oral proceedings under
his (Mr Chivarov's) supervision and responsibility". Appellant 1 agreed
to this with the proviso that Mr Huber would "not make the complete
case". The opposition division allowed Mr Huber to speak "on selected
issues under Mr Chivarov's responsibility". After the impugned decision
was pronounced, appellant 1 submitted that, according to its
observations, Mr Huber had spoken "for more than 50% of the time" and
that this was not what had been agreed at the beginning of the oral
proceedings.

(...)

Mr
Huber, the accompanying person of the representative of the proprietor
(now appellant 2) within the meaning of G4/95 at the oral proceedings
before the opposition division, had not been previously announced. The
opposition division agreed that Mr Huber could talk upon specific points
under the responsibility of the professional representative Mr
Chivarov. Under these circumstances, appellant 1 had no other option
than to continue to attend the oral proceedings or to withdraw
therefrom. Appellant 1 could not have foreseen whether Mr Huber would
indeed only talk about specific points in order to support the otherwise
exhaustive submissions by the professional representative or whether he
would take the floor for a longer time.

However, during the oral
proceedings the professional representative, Mr Chivarov, did not speak
more than two sentences in the period up until the lunch break. After
the break, the professional representative intervened a few times but
did not present the entire case. This was in fact done by Mr Huber. As a
result, Mr Huber took the floor for presenting the vast majority of the
submissions by appellant 2.

Since in the morning of the day of
the oral proceedings, Mr Chivarov did not speak for more than two
minutes in total, Mr Huber did not make submissions relating only to
specific points as agreed at the beginning of the oral proceedings. The
criteria developed by the Enlarged Board of Appeal concerning the
authorisation of an accompanying person had been violated. This amounted
to a substantial procedural violation.
(...)

Reasons for the Decision

(...)

8. Appellant 1's request for reimbursement of the appeal fee and to remit the case to the opposition division

8.1
According to Rule 103(1)(a) EPC, "the appeal fee shall be reimbursed...
where the Board of Appeal deems an appeal to be allowable, if such
reimbursement is equitable by reason of a substantial procedural
violation...".

8.2 The board is of the opinion that no substantial
procedural violation occurred in the proceedings leading to the
impugned decision. The reasons therefor are as follows.

8.2.1 In
G4/95 the Enlarged Board of Appeal held that "an accompanying person is
not excluded from making oral submissions in relation to either legal or
technical issues on behalf of a party to the proceedings, under the
control of the professional representative, and in addition to the
complete presentation of the party's case by the professional
representative" (reasons 8(a), last paragraph). If "a request for an
accompanying person to present oral submissions is made either shortly
before the date appointed for oral proceedings, or at the oral
proceedings, such a request should in the absence of exceptional
circumstances be refused by the EPO unless each opposing party agrees to
the making of the oral submissions requested" (reasons 10, last
paragraph).

8.2.2 In the case at hand, it is undisputed that the
person (Mr Huber) accompanying the professional representative (Mr
Chivarov) had not been announced prior to the oral proceedings before
the opposition division.

According to the minutes of the oral
proceedings before the opposition division, at the beginning of the oral
proceedings, Mr Chivarov requested that Mr Huber be allowed to speak
"on selected issues during the oral proceedings under his (Mr
Chivarov's) supervision and responsibility". This request, therefore,
amounted to a request for oral submissions by the accompanying person in
addition to the complete presentation of appellant 2's case by the
professional representative.

8.2.3 Further according to the
minutes, appellant 1 "objected against Mr Huber being the only speaker
but agreed on Mr Huber contributing submissions under Mr Chivarov's
responsibility and with the provisio (sic) that he would not make the
complete case".

Appellant 1 thus agreed to the accompanying person
making oral submissions under the control of the professional
representative, and in addition to the complete presentation of
appellant 1's case by the professional representative as foreseen in
G4/95. Whether appellant 1 had the subjective impression that it had no
choice but to agree is in this context of no relevance. In fact,
appellant 1 could have refused its agreement and, if the opposition
division had decided to allow the accompanying person to make oral
submissions despite the missing consent of appellant 1, could still have
challenged this decision during the appeal proceedings.

Therefore,
the opposition division's decision that "Mr Huber was allowed to speak
on selected issues under Mr Chivarov's responsibility" was in line with
G4/95 and, therefore, cannot be said to amount to a procedural
violation.

8.2.4 According to G4/95 (reasons 11), "the EPO should
always be satisfied that oral submissions by an accompanying person are
made under the continuing responsibility and control of the professional
representative". Thus, when conducting oral proceedings, the opposition
division has the duty to ensure that the oral submissions made by an
accompanying person satisfy the above conditions, i.e. that they are
made in addition to the complete presentation of the party's case by its
professional representative and under the continuing responsibility and
control of the professional representative.

8.2.5 In the case at
hand, the minutes of the oral proceedings, up to the pronouncement of
the decision, do not state who made the submissions on behalf of
appellant 2. It is only after the pronouncement of the decision that the
minutes state that "the opponent mentioned that according to his
observation, Mr Huber had spoken for more than 50% of the time and that
this was not what was agreed on at the beginning of the proceedings".

Also,
appellant 1 submitted in its statement of grounds of appeal that the
professional representative, Mr Chivarov, did not speak more than two
sentences during the oral proceedings in the period up until the lunch
break. After the break, the professional representative intervened a few
times but did not present the entire case. This was in fact done by Mr
Huber, his assistant. As a result, Mr Huber spoke in the vast majority
of the submissions by appellant 2. Hence, according to appellant 1, the
submissions made by Mr Huber did not comply with the conditions set
forth in G4/95, i.e. were not in addition to the complete presentation
of appellant 2's case by the professional representative, Mr Chivarov.

8.2.6
Conversely, appellant 2 in its statement of grounds of appeal contested
the submissions by appellant 1. It was apparent from the minutes of the
oral proceedings that the opposition division had been satisfied that
the submissions by the accompanying person were made under the
continuing responsibility of appellant 2's professional representative.

8.2.7
The board considered the submissions of the parties and the content of
the minutes of the oral proceedings before the opposition division. It
is not possible to establish, on an objective basis, whether the
submissions made by the accompanying person were in addition to the
complete presentation of the professional representative or whether they
went beyond that or even amounted to a presentation of substantially
the complete case of the party.

8.2.8 The board is, however, of
the opinion that it was incumbent on appellant 1 to inform the
opposition division of any alleged negligence of the opposition
division's duty to ensure that the oral submissions by Mr Huber be made
under the aforementioned conditions as soon as it became aware of it.
This immediate reaction is required since a party to the proceedings
must take an active part and must on its own initiative submit in due
time whatever will support its position (cf. R 2/08, reasons 8.5).

In
the case at hand, appellant 1 should and could have informed the
opposition division accordingly at the latest before the lunch break
since, according to its submissions, at that point in time the
professional representative had only made a few submissions, i.e. the
accompanying person's oral submissions were apparently not only in
addition to the complete presentation of appellant 2's case by the
professional representative. Appellant 1 failed to inform the opposition
division accordingly.

8.2.9 Furthermore, the conditions
elaborated in G 4/95 are intended to ensure that during oral
proceedings, one party does not present oral submissions which take an
opposing party by surprise and for which such opposing party is not
prepared (G 4/95, reasons 10, second paragraph).
In the case at
hand, there is nothing that would indicate that appellant 1 was taken by
surprise or that it was not prepared, or at least could not have been
prepared, for the oral submissions made by the accompanying person. The
board notes that the accompanying person had been presented as a trainee
(see item 1, first paragraph of the minutes) and that appellant 1 did
not argue that it had been taken by surprise by the presentation of the
accompanying person.

8.3 In summary, the board fails to see that a
procedural violation, let alone a substantial one, occurred during the
proceedings before the opposition division.

8.4 The request to reimburse the appeal fee and to remit the case to the opposition division is therefore not allowed.

This decision has European Case Law Identifier: ECLI:EP:BA:2014:T145811.20141023. The whole decision can be found here. The file wrapper can be found here. Photo "SING" by Angela Meißnerobtained via 500px, under the CC-By 3.0 license.